That probably overstates the contentiousness a bit because there is evidence that the parties are actually trying to work together. Take for instance their Joint Submission in Response to Order Regarding Rule 706 Experts. [PDF] The parties truly seem to be trying to comply with the court's directive to identify and

“recommend two qualified economists or other experts to testify under FRE 706 concerning whether or not the claims tried to the jury, if infringed, constitute the basis for demand for Android.”

Before we go on, here are all the filings:

233 - Filed & Entered: 07/25/2011
Motion Hearing
Docket Text: Minute Entry: Motion Hearing held on 7/21/2011 before William Alsup (Date Filed: 7/25/2011) re [171] MOTION To Exclude Expert Opinions and Testimony (Daubert) filed by Google Inc. Motion taken under submission. (Court Reporter Sahar Bartlett.) (dt, COURT STAFF) (Date Filed: 7/25/2011)

234 - Filed & Entered: 07/26/2011
Response ( Non Motion )
Docket Text: RESPONSE to re [195] Order JOINT SUBMISSION REGARDING RULE 706 EXPERTS by Google Inc.. (Van Nest, Robert) (Filed on 7/26/2011)

235 - Filed & Entered: 07/26/2011
Response to Order to Show Cause
Docket Text: RESPONSE TO ORDER TO SHOW CAUSE by Google Inc. DECLARATION OF ROBERT VAN NEST RE RULE 706 EXPERTS. (Van Nest, Robert) (Filed on 7/26/2011)

236 - Filed & Entered: 07/27/2011
Order
Docket Text: ORDER RE SEARCH FOR RULE 706 EXPERTS re [234] Response ( Non Motion ) filed by Google Inc., [235] Response to Order to Show Cause filed by Google Inc.. Signed by Judge Alsup on July 27, 2011. (whalc1, COURT STAFF) (Filed on 7/27/2011)

237 - Filed & Entered: 07/27/2011
Stipulation
Docket Text: STIPULATION and [Proposed] Order Regarding Exchange of Expert Demonstrative Exhibits by Oracle America, Inc.. (Muino, Daniel) (Filed on 7/27/2011)

238 - Filed & Entered: 07/27/2011
Order
Docket Text: STIPULATED ORDER REGARDING EXCHANGE OF EXPERT DEMONSTRATIVE EXHIBITS re [237] Stipulation filed by Oracle America, Inc.. Signed by Judge Alsup on July 27, 2011. (whalc1, COURT STAFF) (Filed on 7/27/2011)

239 - Filed & Entered: 07/27/2011
Order
Docket Text: NOTICE RE SUBPOENAS FOR TRIAL WITNESSES. Signed by Judge Alsup on July 27, 2011. (whalc1, COURT STAFF) (Filed on 7/27/2011)

240 - Filed & Entered: 07/27/2011
Opposition/Response to Motion
Docket Text: RESPONSE (re [214] Amended MOTION for Leave to File Supplement Invalidity Contentions ) filed by Oracle America, Inc.. (Attachments: # (1) - Declaration Declaration of Marc Peters in Support of Oracle's Opposition to Google's Motion for Leave to Amend Invalidity Contentions)(Peters, Marc) (Filed on 7/27/2011)

241 - Filed & Entered: 07/27/2011
Administrative Motion to File Under Seal
Docket Text: Administrative Motion to File Under Seal Portions of the Parties' Joint Letter filed by Oracle America, Inc.. (Holtzman, Steven) (Filed on 7/27/2011)

242 - Filed & Entered: 07/27/2011
Letter
Docket Text: Letter from Robert A. Van Nest re July 21 Hearing. (Van Nest, Robert) (Filed on 7/27/2011)

243 - Filed & Entered: 07/28/2011
Declaration in Support
Docket Text: Declaration of Matthias A. Kamber in Support of [241] Administrative Motion to File Under Seal Portions of the Parties' Joint Letter filed byGoogle Inc.. (Related document(s)[241]) (Kamber, Matthias) (Filed on 7/28/2011)

244 - Filed & Entered: 07/28/2011
Proposed Order
Docket Text: Proposed Order re [241] Administrative Motion to File Under Seal Portions of the Parties' Joint Letter by Google Inc.. (Kamber, Matthias) (Filed on 7/28/2011)

245 - Filed & Entered: 07/28/2011
Order
Docket Text: ORDER Setting Hearing re Parties' 7/27/2011 Joint Discovery Letter. Discovery Hearing set for 8/1/2011 09:30 AM in Courtroom 2, 4th Floor, Oakland before Magistrate Judge Donna M. Ryu. Signed by Magistrate Judge Donna M. Ryu on 07/28/2011. (dmrlc1, COURT STAFF) (Filed on 7/28/2011)

246 - Filed & Entered: 07/28/2011
Stipulation
Docket Text: STIPULATION and Proposed Order to Extend Fact Discovery Cut-Off and Due Dates for Expert Reports by Oracle America, Inc.. (Muino, Daniel) (Filed on 7/28/2011)

247 - Filed & Entered: 07/28/2011
Letter
Docket Text: Letter from Robert Van Nest re Leave to File Two Short Motions. (Van Nest, Robert) (Filed on 7/28/2011)

248 - Filed & Entered: 07/29/2011
Response ( Non Motion )
Docket Text: RESPONSE to re [247] Letter by Oracle America, Inc.. (Norton, William) (Filed on 7/29/2011)

Next up, Oracle is opposing Google's request to supplement its invalidity contention. Oracle filed this opposition statement. Basically, Oracle is saying it is unfair for Google to amend its invalidity contentions so late in the game. On the other hand, when Oracle has been dragging its feet in narrowing the claims to be asserted at trial, exactly what is Google supposed to do? In fact, Google did exactly what Oracle admits it suggested:

On June 7, counsel for Oracle told counsel for Google that the parties were not likely to reach a compromise and that Google should proceed to file a motion to amend its invalidity contentions.

But it goes deeper than that. What seems to be lost in all of this is a serious search for the truth as to all relevant prior art and whether the patents truly are valid. Avoiding that certainly doesn't seem to be in the public interest. We would hope that the court allows Google's motion. However, absent Google's response and taking Oracle's arguments at face value, the Oracle opposition certainly gives the court a good deal to consider.

The magistrate has set a hearing for Monday, August 1, on the discovery disputes between the parties. We should get some indication of whether one or both parties have been as cooperative as they claim to be.

The parties have agreed that discovery should be extended, including extending the deadline for depositions until the end of August. Judge Alsup still has to rule on this stipulation.

Finally, there is the dispute between the parties as to whether Oracle breached the protective order in submitting some documents to the court during the Daubert hearing that were marked as confidential by Google. They each tell a different story. The letters to the court are included below.

************

Joint Submission in Response to Order Regarding Rule 706 Experts

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

Plaintiff,

v.

GOOGLE INC.

Defendant.

CASE NO. CV 10-03561 WHA

JOINT SUBMISSION IN RESPONSE TO ORDER REGARDING RULE 706 EXPERTS

Dept.: Courtroom 9, 19th Floor
Judge: Honorable William H. Alsup

RESPONSE

Having now concluded the vetting process, the parties regret to inform the Court that they do not yet have agreed experts who fulfill the Court’s criteria. All experts vetted by the parties are either (1) unavailable (e.g., Candidate A), (2) not located in the District (e.g., Candidate A, Candidate B, Candidate C, Candidate D, and Candidate E), or (3) have actual or apparent conflicts that one party or the other believes would prevent them from being an appropriate court-appointed expert (e.g., Candidate C (previously approached Oracle in connection with this litigation), Candidate B (recently adverse to Oracle, and employment issue with consulting firm retained by Oracle in this case), Candidate D (investor in Google, has written on Android, and has stated positions on software patents generally), Candidate E (contacts with Google and past payment by Google), Candidate F (contacts with Sun Microsystems), and Candidate G (represented Google in two previous cases)). Google objects to one additional potential expert proposed by Oracle, Candidate H, on the ground that he is a technical (computer science) rather than a marketing expert. The parties will separately submit the names of the candidates to avoid putting them and the parties’ comments about them in the public spotlight.

The parties are willing to continue working together in an effort to satisfy the Court’s request for recommendations, but would need more time to do so. In light of the results to date and the Court’s July 22, 2011 Order on the Daubert motion, however, the parties would

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With respect to the Court’s statement that the parties may submit declarations showing cause why such appointments would (or would not) be advisable, and describing the assignments counsel would prefer be given to the experts, Google is submitting a declaration herewith. Oracle is not submitting a declaration, but notes that it disagrees with Google’s position as to the advisability of a marketing expert as compared to a technical expert on the issue of whether the claims to be tried to the jury constitute the basis for demand for Android.

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BOIES, SCHILLER & FLEXNER LLP
By: /s/ Steven Holtzman
Steven C. Holtzman
BOIES, SCHILLER & FLEXNER LLP
DAVID BOIES (Admitted Pro Hac Vice)
[address, phone, fax]
STEVEN C. HOLTZMAN (Bar No. 144177)
[address, phone, fax]

MORRISON & FOERSTER LLP
MICHAEL A. JACOBS (Bar No. 111664)
MARC DAVID PETERS (Bar No. 211725)
DANIEL P. MUINO (Bar No. 209624)
[address, phone, fax]

ORACLE CORPORATION
DORIAN DALEY (Bar No. 129049)
DEBORAH K. MILLER (Bar No. 95527)
MATTHEW M. SARBORARIA (Bar No. 211600)
[address, phone, fax]

Attorneys for Plaintiff
ORACLE AMERICA, INC.

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KEKER & VAN NEST LLP
By: /s/ Robert Van Nest
Robert A. Van Nest
KEKER & VAN NEST LLP
ROBERT A. VAN NEST (SBN 84065)
CHRISTA M. ANDERSON (SBN184325)
[address, phone, fax]

KING & SPALDING LLP
SCOTT T. WEINGAERTNER (Pro Hac Vice)
ROBERT F. PERRY
BRUCE W. BABER (Pro Hac Vice)
[address, phone, fax]

KING & SPALDING LLP
DONALD F. ZIMMER, JR. (SBN 112279)
CHERYL A. SABNIS (SBN 224323)
[address, phone, fax]

GREENBERG TRAURIG, LLP
IAN C. BALLON (SBN 141819)
HEATHER MEEKER (SBN 172148)
[address, phone, fax]

Attorneys for Defendant

4

Order re Search for Rule 706 Experts

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF CALIFORNIA

Plaintiff,

v.

GOOGLE INC.,

Defendant.

No. C 10-03561 WHA

ORDER RE SEARCH FOR RULE 706 EXPERTS

On July 5, 2011, the parties were requested to jointly submit the names and resumes of candidates to serve as Rule 706 experts by July 26 (Dkt. No. 195). When the deadline arrived, the parties instead “inform[ed] the Court that they do not yet have agreed experts who fulfill the Court’s criteria.” The parties “are willing to continue working together in an effort to satisfy the Court’s request for recommendations,” but seek “further direction” (Dkt. No. 234). Because the July 5 request has proven problematic, it is modified as follows.

First, the candidates need not be drawn from this district as originally requested. Second, if the parties are unable to agree on jointly proposed candidates, then each party may separately submit its own candidates. The names and resumes of these candidates may be filed under seal. Third, any and all candidates must be submitted by AUGUST 3, 2011. If no candidates are submitted by that date, then the Court will independently search for candidates, and the parties will still be required to pay the costs of the expert(s) chosen from that pool pursuant to FRE 706(b). Such a search likely would portend delay of the trial date, because any expert will need time to be brought up to speed on the facts of the case after being appointed.

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IT IS SO ORDERED.

Dated: July 27, 2011.

WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE

2

Oracle's Opposition to Google's Amended Motion for Leave to Supplement Invalidity Contentions

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

ORACLE AMERICA, INC.
Plaintiff,
v.
GOOGLE INC.
Defendant.

Case No. CV 10-03561 WHA

ORACLE AMERICA, INC.’S OPPOSITION TO GOOGLE INC.’S AMENDED MOTION FOR LEAVE TO SUPPLEMENT INVALIDITY CONTENTIONS

Hearing Date: August 18, 2011
Time: 2:00 p.m.
Dept.: Courtroom 9, 19th Floor
Judge: Honorable William H. Alsup

I. INTRODUCTION

The middle of expert discovery is the wrong time for Google to swap out most of its invalidity theories and trade them for different ones. Google’s own motion demonstrates that Google inexplicably delayed between four and six months to seek leave to add most of its “new” invalidity theories. This is the exact opposite of diligence, and is enough to end the “good cause” inquiry. Google’s stalling tactics have caused significant prejudice to Oracle’s trial planning by leaving open the question as to what Google’s invalidity case is going to be. The parties are supposed to be narrowing the case, not expanding it right in the middle of expert discovery, which will be well under way by the time the Court hears this motion. The Patent Local Rules exist to ensure patent cases are litigated in a fair and orderly fashion. They are intended to have bite—parties must show good cause to change patent theories mid-stream. Google must show that it was diligent in requesting leave to amend from the Court and that its actions have not prejudiced Oracle. Google fails on both counts.

II. PROCEDURAL HISTORY

Google served its initial Invalidity Contentions on January 18, 2011, which included thirty-five §§ 102 and 103 charts, §§ 101, 112, and 251 defenses, and a twenty-two page table of 500+ additional references, for which Google did not provide any detailed contentions in the form of prior art charts as required by Patent L.R. 3-3. Declaration of Marc Peters in Support of Oracle’s Opposition to Google’s Motion for Leave To Amend Invalidity Contentions (“Peters Decl.”) at ¶ 1. Next, Google requested reexaminations of the patents in February and March 2011. Although Google asserted many new prior art references in the reexamination requests, it did not then seek to include them in this case. (Id. at ¶ 2.)

Not until May 6, 2011, did Google identify any particular references that it desired to add to its Invalidity Contentions, and then, only by name. (Id. at ¶ 5.) On May 16, Google provided formal proposed Supplemental Invalidity Contentions, which included twenty-one new or revised prior art charts and extensive additions to its § 101 and 112 defenses. (Id.) Google’s May 6 letter and May 16 charts did not, however, include theories based on Krakowiak or Vyssotsky (new ’104 chart A-10) or JavaOS (still no chart), or some revisions to earlier charts (revised charts A-2 and

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On May 23, 2011, the Court accepted the agreed-upon portion of the parties’ plan to limit issues for trial. (ECF No. 147.) On June 1, in view of Google’s then-asserted-and-proposed invalidity defenses (which did not include theories based on Krakowiak, Vyssotsky, JavaOS, Wahbe/JLS, and Roskind/Roskind), Oracle selected its fifty patent claims. On June 7, counsel for Oracle told counsel for Google that the parties were not likely to reach a compromise and that Google should proceed to file a motion to amend its invalidity contentions. (Id. at ¶ 8.) On June 11, Google demanded that Oracle prepare its portion of a joint motion to be filed with Magistrate Judge Ryu. Oracle did so. On June 15, Google announced that it would file a précis with the Court instead. (Id. at ¶¶ 10-11.)

Also on June 15, 2011, Google identified invalidity defenses for each patent claim by the names of the references only—no additional Patent L.R. 3-3 charts were provided. Some of the identified invalidity theories were completely new to Oracle and not included in any thenprovided chart: Krakowiak and Vyssotsky for the ’104, Vyssotsky for the ’702, Wahbe/JLS for the ’447, and Roskind/Roskind for the ’476. (Id. at ¶ 12.) Gong for the ’447 and ’476 had been named but not charted in Google’s May 16 disclosure. In all, a majority of Google’s selected invalidity grounds were new defenses that Google had not disclosed in January 2011. Also, Google also purported to “reserve” the right to assert alternate defenses in the event the Court denied Google’s anticipated motion to supplement its Invalidity Contentions, so the total number of asserted defenses selected exceeded the six permitted by the Court. (Id.) Two days later, Google filed its précis asking for permission to file this motion on June 17, 2011.

Astonishingly, even though the Court granted Google leave to file this motion on June 21, 2011, Google waited more than two weeks to file it—until July 8, 2011. And there were many problems with the invalidity theories that Google sought to advance. Google’s July 8 motion sought leave to add Vyssotsky (revised chart B-4), Wahbe/JLS, Roskind/Roskind, Gong, among other invalidity theories. Three hours before filing, Google sent an email purporting to send a “complete set of Google’s invalidity claim charts.” Later that day, Oracle pointed out that there

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What followed was a quick series of retractions. (Id.) On July 13, Google withdrew its Griffin/JLS invalidity theory. Shortly thereafter, Google withdrew its Wahbe/JLS, Roskind/Roskind, and Gong invalidity theories. (Because Google admitted in its July 8 motion that Gong was not prior art, this may have been wise.) Shortly before midnight on July 13, Google filed an amended motion that dropped Vyssotsky from its proposed revised chart B-4.

In sum, in the time between May 6 and July 13, Google advanced forty-two new invalidity theories based on prior art combinations and withdrew twenty-five of the new theories and most of the January ones, leaving Oracle still to guess as to what Google’s invalidity case will look like at trial. Oracle has been whipsawed since the end of May. Google’s behavior is a flagrant violation of the Patent Local Rules and the values they codify.

III. GOOGLE HAS NOT SHOWN GOOD CAUSE TO AMEND UNDER PATENT L.R. 3-6

The Patent Local Rules “exist to further the goal of full, timely discovery and provide all parties with adequate notice and information with which to litigate their cases . . . .” IXYS Corp. v. Advanced Power Tech., Inc., No. C 02-03942 MHP, 2004 U.S. Dist. LEXIS 10934, at *8 (N.D. Cal. June 16, 2004). Failure to adhere to the deadlines established by the rules can be very disruptive, which is why “[a]mendment of . . . the Invalidity Contentions may be made only by order of the Court upon a timely showing of good cause.” Patent L.R. 3-6. “[T]he ‘good cause’ inquiry first considers whether the moving party was diligent in amending its contentions and then considers prejudice to the non-moving party should the motion to amend be granted.” West v. Jewelry Innovations, Inc., No. C 07-1812 JF (HRL), 2008 U.S. Dist. LEXIS 84928, at *4 (N.D. Cal. Oct. 8, 2008). Google has not shown that it was diligent in amending its contentions.

To be diligent, a party must seek to amend its contentions promptly after discovering the new information. O2 Micro Int’l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1366-67

3

Google has the burden of establishing its diligence. O2 Micro, 467 F.3d at 1366. Merely asserting that it made “diligent inquiries” does not meet this burden. West, 2008 U.S. Dist. LEXIS 84928, at *10. If Google “fails to establish diligence, the ‘good cause’ inquiry should end.” Id., at *11 (citation omitted); O2 Micro, 467 F.3d at 1368 (“Having concluded that the district court could properly conclude that O2 Micro did not act diligently in moving to amend its infringement contentions, we see no need to consider the question of prejudice to MPS.”).

A. The Court Should Reject Charts A-9 & A-12 Because Google Could Have Asserted These Invalidity Theories Earlier Had It Been Diligent

Google identified the Rau article in its January 18 Invalidity Contentions, but did not then apply it against the ’104 patent. In fact, Google stated that Rau was among the references that were “not the most pertinent” and “unnecessarily duplicative.” (Peters Decl. Ex. 5 at 24, 43.) Google may have changed its mind, but that does not show diligence. See Brilliant Instruments, Inc. v. GuideTech, Inc., No. C 09-5517 CW, 2011 U.S. Dist. LEXIS 48865, at *4-6 (N.D. Cal. Apr. 29, 2011) (denying defendants’ motion for leave to add new prior art because defendant did not investigate it promptly after discovering it).

What excuse does Google give for adding Rau at this late date? Google says that Rau only became important after the Court construed the terms “resolve” and “intermediate form (object) code.” But Google learned Oracle’s proposed definitions in February 2011 (ECF No. 91 at 7-8), and the Court adopted Oracle’s proposals almost verbatim. Google could have foreseen the Court’s claim construction and should have analyzed the Rau article in light of Oracle’s proposed definitions, not just its own. See Nike, Inc. v. Adidas Am. Inc., 479 F. Supp. 2d 664, 669 (E.D. Tex. 2007) (“The court concludes that this definition was not so different from the parties’

4

B. The Court Should Reject Chart A-10 Because Google Could Have Asserted These Invalidity Theories Earlier Had It Been Diligent

The Court should reject Google’s attempt to add an obviousness combination based on Tafvelin in view of “Multics dynamic linking as described in Daley, Krakowiak, and/or Vyssotsky.” Supplementation is improper where “there is no showing that the publication prior art references were difficult to locate and no showing that any diligence was exercised in discovering them.” Sunpower Corp. Sys. v. Sunlink Corp., No. C-08-2807 SBA (EMC), 2009 U.S. Dist. LEXIS 85425, at *9 (N.D. Cal. June 12, 2009).

Tafvelin, Daley, Krakowiak, and Vyssotsky are not obscure or hard to find. On the contrary, Google could have found all of these references by using its own online database, Google Scholar, where Google has indexed them for searching.¹ Indeed, searching for the term “Multics” on Google Scholar brings up Daley as the sixth hit and Vyssotsky as the tenth hit. See http://scholar.google.com/scholar?hl=en&q=multics. A diligent search would have led Google right to the publications in enough time for disclosure in January. Google’s counsel’s declaration fails to explain why Google could not have found these four references earlier. (ECF No. 214-1 at 1-2.) The Court is left to wonder why Google made a point of saying “[m]any of these older prior art documents were not indexed or easily searchable” (Id. at ¶ 10) when the references in question had been indexed, by Google no less. And as Google did not find Krakowiak and Vyssotsky until the last minute, what would be the harm to leave them out? Google has not shown they are significant in any way. Google’s motion should be denied.

¹See http://scholar.google.com/scholar?start=10&q=Tafvelin+&hl=en&as_sdt=0,5; http://scholar.google.com/scholar?hl=en&q=multics; http://scholar.google.com/scholar?hl=en&q=Krakowiak+multics (last visited July 26, 2011).

5

The JavaOS part of Google’s motion is premature, at best. Google is asking the Court for permission to reserve a future on-sale bar contention based on Sun’s JavaOS product. Google has not provided invalidity charts to explain such a contention. Because Google has not complied with Patent L.R. 3-3(c), this Court should deny Google’s request for “the ability to further supplement its contentions with invalidity charts based on JavaOS” at some day in the indefinite future. (ECF No. 214 at 7.) If there ever comes a time when Google can adequately describe how some version of JavaOS allegedly contained each and every patent claim limitation and was on sale more than one year before the application date, then that is the time that the Court should consider whether Google was diligent in advancing this theory. That time has not come.

The supposed discovery issues surrounding JavaOS are a red herring. Oracle produced JavaOS code in May, as Google concedes. (Id.) That production includes JavaOS source code that predated the ’702 patent by more than a year. If Google disputes that, it could have filed a motion with Magistrate Judge Ryu.

Some context on the origin of the JavaOS issue may be helpful to the Court. Oracle identified JavaOS 1.0 (mistakenly, as it turns out) as an embodiment of the ’702 patent in its December 2, 2010 infringement contentions. If this were enough to raise an on-sale bar issue, Google could have included it in its January invalidity contentions, informed by the public announcement of JavaOS 1.0. (ECF No. 214-1 Ex. L.) But it did not. After Google waited until June 15, 2011 to contend there was a JavaOS on-sale bar, Oracle discovered the mistake in its contentions. The source code that implements the ’702 invention was first put into the thenunreleased JavaOS 1.1 product in May 1997 (and not into the JavaOS 1.0 product). The May 20, 1997 JavaOS 1.1 release notes plainly identify the mclass technology as a “New Feature”: “New Java ‘linker’ that combines multiple .class files into one .mclass file. New ROMizer – rewrite to be more modular, Handles new .mclass files.” (Peters Decl. Ex. 6 at 33, emphasis added.) Google has received these materials in discovery and stubbornly refuses to believe them. Notably, Google could have asked at the deposition of one inventor of the ’702 patent about when the

6

Oracle has since notified Google that Oracle would not be relying on JavaOS 1.0 as an embodiment of the ’702 patent for any reason, because it was not in fact an embodiment. (ECF No. 214-1 Ex. M.) Google argues that this was an attempt to amend Oracle’s infringement contentions without leave. Not so. The Patent Local Rules only say that if a patent owner wishes to reserve the right to rely on its own product as being an embodiment, it must make certain disclosures. Oracle, discovering the mistake, has relinquished its rights with respect to the mistaken version. It is up to Google to prove that the invention was on sale more than a year before the patent filing date by clear and convincing evidence, and this it will not be able to do, because it is not true. If the Court wishes to grant Google’s motion without a proper claim chart, Oracle asks that it be allowed to amend its infringement contentions to drop JavaOS 1.0 from its contentions, for formality’s sake if no other.

D. The Court Should Reject Charts E-9, E-10 and E-11 Because Google Could Have Asserted These Invalidity Theories Earlier Had It Been Diligent

The Court should reject Charts E-9, E-10, and E-11, because Google waited almost six months to seek leave to add these obviousness theories to the case. The charts disclose combinations of Magnusson with Wakeling, Lewis, or Deutsch. In January, 2011, Google asserted all four references as anticipatory references and provided charts, but did not provide obviousness charts based on combinations of these references, even though it certainly could have. After Oracle pointed out in an interrogatory response how Google’s anticipation arguments were defective, Google abandoned them and now seeks to use the references for obviousness.

Google has not shown good cause to allow this change in legal theories. All Google can argue is lack of prejudice, but good cause is much more than that. Google had all this art in January—why not make an obviousness contention then? On this point, Google’s motion and declaration are silent. The truth is that Google developed these new theories only after Oracle demonstrated that Google’s anticipation arguments would fail. But Invalidity Contentions are not supposed to be reply briefs. Allowing Google to respond to Oracle’s validity arguments would

7

In place of a true diligence showing, Google argues that Oracle has been on notice of Google’s reservation of rights to combine these § 102 references. This is very weak tea. In its initial Invalidity Contentions, Google stated:

To the extent that any one of the previously discussed anticipatory references is found not to anticipate one or more Asserted Claims, various references described herein and/or the knowledge and skill of a person of ordinary skill in the art at the time of the invention, in combination with any one of the anticipatory references, render the claim invalid as obvious.

E. The Court Should Reject the Reexamination References Because Google Did Not Diligently Move to Add Them to the Case

The Court should not allow Google to add new prior art references and theories that it used to request reexamination of the asserted patents for one simple reason: Google intentionally delayed seeking to add them to the litigation. Google concedes in its opening brief that it had prepared claim charts for these references in February and March. (ECF No. 214 at 8.) And yet it sat on its hands until July before filing this motion. Perhaps this is why Google does not even describe the “good cause” for adding these references—it only argues lack of prejudice. (ECF No. 214 at 8.) Google does not explain or justify the choices it made.

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F. The Court Should Reject § 101/§ 102 Printed Matter Defense Because Google Could Have Asserted The Invalidity Theory Earlier Had It Been Diligent

The Court should reject Google’s attempt to add a new § 101 / § 102 printed matter defense against the “computer-readable medium” (and similarly worded) claims of the ’720, ’447, and ’476 patents, because there is no reason Google could not have asserted it before. In January 2011, Google merely contended that all of the asserted claims reflected abstract ideas and so were not patentable as governed by 35 U.S.C. § 101” and that the “computer-readable medium” (and similarly worded) claims were invalid under § 101 because they cover “signals per se.” (Peters Decl. Ex. 5 at 17-18.) It did not identify any defense under the printed matter doctrine. Google claims that it “has since learned that courts conduct what is in effect the same analysis under both § 101 and §102” (ECF No. 214 at 8), and seeks to add a new “printed matter” invalidity theory in

9

IV. GRANTING GOOGLE’S MOTION WOULD PREJUDICE ORACLE

Google’s supplementations at this late stage in the case would prejudice Oracle. Although Google states that Oracle’s counsel conceded there would be no prejudice in late May 2011, that discussion was based on an expectation of a prompt resolution. (Peters Decl. at ¶¶ 6-7.) Google’s stalling in June and July has changed things substantially for the worse for Oracle since then.

By unilaterally deciding to bring this matter to the overburdened Court rather than the assigned Magistrate Judge, by delaying filing a précis requesting permission to file this motion, and by further delaying filing the motion once it received the Court’s permission, Google ensured the parties’ dispute would be resolved in August rather than May. This motion could have been heard promptly by Magistrate Judge Ryu; instead, the motion ended up on the regular 35-day motion calendar. Google’s inexplicable two-week delay in filing its motion after receiving leave pushed out the hearing even more. Thus the resolution of Google’s motion, which could have occurred in June, will not happen until on or after August 18, well into expert discovery. This is highly prejudicial—Oracle should not be required to work through expert discovery and prepare its case based on guesswork as to what is in and what is out.

V. CONCLUSION

Google has not established diligence in seeking to amend its Invalidity Contentions. Its delay in filing this motion has heightened the prejudice to Oracle if the Court were to allow the supplementations. Google has not established good cause to amend at this time, under these circumstances. Therefore, this Court should deny Google’s motion for leave to amend its Invalidity Contentions

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MARC DAVID PETERS
DANIEL P. MUINO
MORRISON & FOERSTER LLP
By: /s/ Marc David Peters

Attorneys for Plaintiff ORACLE AMERICA, INC.

************

Google's Letter to the Court Seeking to Protect Privileged Documents Disclosed by Oracle

[Keker and Van Nest logo]

July 28, 2011

The Honorable William Alsup
U.S. District Court, Northern District of California
450 Golden Gate Avenue
San Francisco, California 94102

Re: Oracle America, Inc. v. Google Inc., No. C 10-3561 WHA

Dear Judge Alsup:

Google seeks leave to file two short motions requesting that the Court redact portions of the record for the Daubert motion the Court heard and ruled upon last week. The relevant passages appear at page 3, lines 24 - 27 of the July 22, 2011 Order, and at the following locations in the hearing transcript: page 23, linel7 - page 24, line 7; page 39, line 24 - page 42, line 16; and page 45, lines 11-16. These motions and the requested orders are necessary because these passages reflect Oracle's improper use of a document that Google subsequently determined was an inadvertently-produced privileged document, subject to the attorney-client privilege.

This situation would not have arisen but for Oracle's violation of the protective order in this matter. The inadvertently-produced document was marked "HIGHLY CONFIDENTIAL -- ATTORNEY'S EYES ONLY" and paragraph 5.2(b) of the protective order specifically states

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Oracle provided no such notice prior to the hearing. Instead, it appeared at the hearing bearing a binder of excerpts from various documents that were not part of its filed opposition and not part of the record, including many that Google had designated "Confidential" or "Attorney's Eyes Only." With regard to the document at issue, that wholesale violation of the protective order had particularly serious consequences, because it meant that Google did not have the opportunity to determine that the underlying document was privileged and to rectify the inadvertent production before Oracle published the contents of the document in open court. Before the July 21, 2011 hearing, that document had not featured in this litigation - it had not been the subject of correspondence between the parties, marked as a deposition exhibit, nor used as an exhibit in any court filing, and therefore Google only learned of its production at the hearing.

Moreover, Oracle's misleading presentation disguised issues that would have been clear from the face of the document itself. Although Oracle implied that it was quoting from an email that had actually been sent, the document that Oracle quoted was in fact an incomplete draft of a privileged email message. The unfinished nature of the email is clear because the "addressee" field is blank and the email itself ends in an incomplete sentence. The document is indisputably privileged, because the final version of the document, which appears on Google's privilege log, was sent to, among others, Google's in-house attorneys, and was also prominently marked "Attorney Work Product." The fact that the document was stored on Google's systems in an incomplete draft form explains its inadvertent production - given the volume and speed of

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Google investigated the cited document immediately after the hearing, and promptly informed Oracle of the privileged nature of the document, requesting that the provisions of the Stipulated Protective Order relating to inadvertently produced privileged documents be followed. Google also requested that Oracle stipulate to the relief Google now seeks leave to request. Despite the fact that Oracle has itself retroactively asserted privilege over hundreds of inadvertently produced privileged document in this matter - requests that Google has honored without question — Oracle has refused to stipulate to the requests.

As stated in the Stipulated Protective Order, "[ijnadvertent production is itself no waiver of privilege." (Docket No. 66 at 18:16-17.) Because Google was not the party who put the content of its privileged document in the record, and because Oracle's violation of the protective order deprived Google of the opportunity to prevent Oracle from doing so, Google now respectfully requests the opportunity to file the motions necessary to preserve its privilege, consisting of a noticed motion to redact a hearing transcript pursuant to General Order 59, and an administrative motion to seal a portion of the Court's July 22, 2011 Order pursuant to Civil Local Rules 7-11 and 79-5.

Sincerely,

Robert A. Van Nest

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Oracle's Response to the Google Letter

[Boies, Schiller, & Flexner LLP logo]

July 29, 2011

The Honorable William Alsup
U.S. District Court, Northern District of California
450 Golden Gate Avenue
San Francisco, California 94102

Re: Oracle America, Inc. v. Google Inc., No. C 10-3561 WHA

Dear Judge Alsup:

Oracle responds to the précis submitted by Google on July 28, 2011. (Dkt. No. 247.)

At the July 21, 2011, hearing on Google’s Daubert motion, Oracle referred to a draft email written by Tim Lindholm, a current Google engineer and former Sun employee. The Court read portions of the Lindholm document into the record and quoted it on page 3 of its Order. At the hearing the Court informed Google counsel that, at trial, “you are going to be on the losing end of this document.” (7/21/2007 Tr. at 41:5-6.) Google now seeks leave to file a motion to strike all mention of the Lindholm document from the Court’s Daubert hearing transcript and Daubert Order. Google now says the document is privileged and confidential, and that its disclosure was the result of Oracle’s supposed failure to comply with the Protective Order. As the record already establishes that the document is neither privileged nor confidential, and Oracle complied directly with all orders of the Court, the Court should deny Google’s précis and hold that no privilege applies to the Lindholm document.

Google – not Oracle – has the burden of proving that the document is privileged. See U.S. v. Richey, 632 F.3d 559, 566 (9th Cir. 2011). The Protective Order prohibits Oracle from presenting the information in the document to the Court to determine the privilege claim. (Protective Order ¶ 13 (Dkt. No. 66).) If the Court allows Google to file a motion, Oracle requests that the Court allow Oracle to cite the contents of the already disclosed document in its

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First, Google claims the Lindholm document is work product “prepared as a result of direction from counsel in anticipation of litigation,” an assertion that is contradicted by the document on its face.

Second, as Google well knows, it cannot shield non-privileged facts from disclosure by including them in communications to its attorneys. Upjohn Co. v. United States, 449 U.S. 383, 395–96 (1981); Hickman v. Taylor, 329 U.S. 495, 511 (1947); U.S. v. ChevronTexaco Corp., 241 F.Supp.2d 1065, 1075 (N.D. Cal. 2002) (“The mere fact that outside counsel was copied with the e-mail will not shield communications not made for the purpose of securing legal advice.”)

Third, Google’s claim of inadvertent disclosure is not credible. Google produced versions of the Lindholm document more than nine times. Each time, Google designated the document “Highly Confidential – Attorneys Eyes Only.” As the designation must reflect a good faith belief that the document contains sensitive information, Google’s confidentiality designation shows pre-disclosure review of each such version – not inadvertent disclosure.

Fourth, contrary to Google’s assertion, the Daubert hearing was not the first hearing at which the Lindholm document was discussed. Earlier that day, at a discovery hearing, Magistrate Judge Ryu asked Oracle’s counsel to identify documents showing the need for Mr. Lindholm’s deposition. In response, Oracle’s counsel referred to the Lindholm document. At the discovery hearing and at the Daubert hearing, Google counsel demonstrated that they were already familiar with the document, discussed its substance with the Court, and made no claim of privilege.

Only after these events, in which Google’s counsel twice argued the substance of the Lindholm document, twice failed to persuade the Court, and was told in no uncertain terms that the Lindholm document could be a serious blow to its case, did Google reverse course and claim

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Indeed, to the extent that the arguments in Google’s précis reflect its approach to privilege in general, the legitimacy of its entire privilege log is thrown into doubt. Google also asserts that Oracle breached Paragraph 5(b) of the Protective Order by supposedly failing to inform Google that Oracle expected the Daubert hearing to include material that Google had designated as confidential. That is untrue. At the outset of the Daubert hearing, Oracle gave Google a copy of the materials it intended to use, disclosed that they included documents that Google had designated as confidential, and stated that Oracle did not intend to discuss their contents. In response, the Court flatly rejected the contention that the documents were confidential at all, stating, “You say whatever you want. If Google has a memo in their file saying, we are about to willfully infringe, there is no way I’m going to keep that secret from the public or the investing public.” (7/21/2011 Tr. 19:9-12.) Not a single Google attorney objected, not one raised any argument in protest. To the contrary, Google’s counsel then disclosed – with no warning at all – the testimony of Jonathan Schwartz, which Google had agreed to treat as Highly Confidential. Ultimately, Google’s selective and inaccurate invocation of the Protective Order is a mere distraction, and lends no support to its request that evidence of its misconduct be scrubbed from the public record of this case.

Oracle thus requests that the Court either (1) deny the précis and hold the Lindholm document is not privileged, or (2) direct Google to show cause justifying its claims that the Lindholm document is privileged and confidential and should be removed from the record.

Respectfully submitted,

/s/ Fred Norton

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